OPPOSITION No B 2 768 227

Transiberica Tours, S.A., C/ Alcalde Sainz De Baranda, 4, 28009 Madrid, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Iziteq B.V., Strawinskylaan 601, 1077 XX Amsterdam, The Netherlands (holder), represented by De Vries & Metman, Overschiestraat 180, 1062 XK Amsterdam, The Netherlands (professional representative)

On 20/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 768 227 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the services of international registration designating the European Union No 1 279 844 , namely against all the services in Class 39. The opposition is based on Spanish trade mark registration No 1 278 026 ‘EASY GOING’ (word mark).

The opponent invoked Article 8(1)(b) EUTMR.

The contested services were the following:

Class 39: Travel reservation and booking services; private guided tour services; ticket booking and reservations services for tours and excursions; travel information; provision of tourist travel information; organization of sightseeing tours; provision of data relating to the transportation of passengers; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not via electronic channels, including the internet.

The services on which the opposition is based are the following:

Class 39: Travel agency services.

1. The signs

EASY GOING
Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The opponent argues that Spanish consumers will understand the English meaning of the words forming the marks. It also states that, as a consequence, the elements ‘EASY’ and ‘izi’ in the signs are the most distinctive elements in them, being ‘GOING’ and ‘TRAVEL’ descriptive and therefore non-distinctive.

The Court observes that the degree of familiarity of the Spanish public with the English language is generally held to be low (judgment of 18 April 2007 in Joined Cases T 333/04 and T 334/04 House of Donuts v OHIM – Panrico (House of donuts), not published in the ECR, paragraph 53 and the case-law cited).

It cannot be assumed that Spanish consumers will understand the English meaning of the words forming the signs, and the opponent has not adduced any evidence to support this claim. It is considered that the verbal elements in the signs have no concept for the relevant public.

Consequently, the earlier mark has no elements more distinctive than others as each are equally distinctive

The contested sign contains, in its middle part, a small red circle ‘’. This can be perceived by consumers as a small letter ‘o’ or as a stylised representation of a dot (i.e. punctuation mark), or as a merely decorative circular shape. If it is perceived as a letter, and given that none of the elements are understood, they are equally distinctive, and the contested mark has no elements more distinctive than others. If it is perceived as a stylised dot or as a decorative circular shape, the contested sign is considered to be formed by the distinctive elements ‘izi’ and ‘TRAVEL’ and by the non-distinctive element ‘’.

Regarding the existence of elements more dominant (visually eye-catching) than others in the contested sign, this mark is formed by the co-dominant elements ‘izi’ and ‘TRAVEL’ and by the less eye-catching element ‘’.

As argued by the opponent, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). It is therefore correct to state that the verbal elements forming the contested mark are of greater impact than the stylization of those words. In addition, in case the element ‘’ is perceived as a stylised representation of a dot or as a decorative circular shape, this will also have less impact on consumers than the verbal elements accompanying it.

An examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (see judgment of 27/06/2012, T-344/09, ‘Cosmobelleza’, paragraph 52.

Visually, the signs coincide in the fact that they both contain letters ‘i/I’, ‘A’, ‘E’. However, these coinciding letters occupy totally different positions within the marks, differ in colour and typeface, and do not lead consumers to perceiving them as visual coincidences between the marks. Indeed, the number of verbal elements in the signs and their lengths mean that consumers will not detect a few letters in common, moreover occupying different positions. As noted above, they will see the signs as a whole and will perceive the substantial differences in the verbal components. Further, even if the stylisation of the contested mark may be perceived as decorative for example, it still serves to visually differentiate the mark from the earlier.

As the signs only coincide in the irrelevant aspects referred to and, since the coinciding letters are not visually perceptible as separate elements but hidden in the signs, it is concluded that the signs are not visually similar.

Aurally, consumers will pronounce the contested mark as ‘/i/zi/tra/vel/’ or as /i/zi/o/tra/vel/, depending on the perception that consumers have of the element ‘’ (i.e. considering it as a letter or not), and the earlier mark as ‘/e/a/si/go/ing/’.

The signs coincide in the sound of the coinciding letters referred to above ‘i/I’, ‘a’, ‘e’, and also in the sound of ‘y’ of the earlier mark, which is pronounced identically to letter ‘i’. However, these common sounds occupy totally different positions within the marks and are preceded and followed by different sounds in each mark. Reference is made to the previous arguments concerning the impact of the length of the signs and therefore, they are not perceived as audible aural coincidences, and it is concluded that the signs are not aurally similar.

The opponent argued that in some parts of the Spanish territory (i.e. two regions called Andalucía and Extremadura) the letters ‘s’ and ‘z’ are pronounced identically, and this would lead to identical pronunciation of the elements ‘EASY’ and ‘izi’.

In this regard, the Opposition Division notes that the vast majority of consumers in the relevant territory pronounce letters ‘s’ and ‘z’ differently. However, even in the event that letters ‘s’ and ‘z’ were pronounced in the same way, this would not be enough under the scenario described above to overcome the conclusion reached. Therefore, also in that case, the marks would be considered not aurally similar, for the same reasons explained above.

Conceptually, the earlier mark has no meaning for the public in the relevant territory.

If the element ‘’ in the contested mark is perceived as a letter or a stylised punctuation mark, this sign lacks also any meaning for consumers. Therefore, in this scenario, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

If the element ‘’ in the contested mark is perceived as a circular shape, the contested mark has the concept of the shape it represents. In this scenario, since the earlier mark will not be associated with any meaning, the signs are not conceptually similar.

As the signs coincide in irrelevant aspects, they are considered dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vanessa PAGE

María del Carmen SUCH SANCHEZ

Richard BIANCHI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.